Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Nicola Searle, Eleonora Rosati, and Merpel, with contributions from Mark Schweizer. Read, post comments and participate! E-mail the Kats here

The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Monday, 30 November 2015

Jeremy Phillips concluded his valedictory presentation, as the concluding part of the 10th anniversary JIPLP program, with a word of caution about the future of IP. He pointed to three vital constituencies, the financial community, the media and the youth, in all of which IP is either poorly understood or simply disregarded. The financial community has a woefully inadequate comprehension of IP while few journals devote any meaningful attention to the area (Jeremy pointed to Managing Intellectual Property and Intellectual Asset Magazine as rare exceptions).

The media engages in excessive coverage of patent trolls and the copyright in selfies taken by a monkey rather than devoting sustained and robust treatment of IP issues. As for the state of IP with the youth, Jeremy brought by way of example Wallace and Gromit and the trivializing of innovation and creativity. This Kat would suggest that there is a fourth constituency that poses a challenge for IP, namely the treatment of IP within the university. Because the university is the link between Jeremy’s three other constituencies, since it is the place that goes about educating young minds who then venture out into the workplace, the state of IP in the university bears close attention. In so doing, there are good reasons for concern.

First, there is the state of IP in law schools. Focusing on the U.S., it appears to this Kat that the general view within the legal Academy is that there is “too much” IP protection, with the result that what is called a “low-protectionist” orientation to IP has taken root. Appealing principally to a call to strengthen the public’s right at the expense of the IP rightsholder, the low protectionist position has the effect of diminishing IP’s sheen as a factor for doing good. It is difficult to imagine that a young legal scholar seeking tenure will focus his research on showing that there is not enough IP protection. As in any other field of discourse, when diversity of the discussion diminishes, quality diminishes as well.

Second, from the vantage of economics, there is increasing skepticism that IP protection is conducive in enhancing innovation. No one challenges that innovation is a factor for doing good, the only issue being how we can best bring it about. The question then becomes whether IP rights contribute to innovation. Here, as well, it seems that the surest way to attract attention is to make the academic argument against IP as a force in supporting innovation. One need only think of the writings of Professors Michele Boldrin and David Levine and the increasing attention that they have received in advancing “the case against patents.”

Third, most MBA programs are characterized by neglect in making IP a material component of their programs. With a few exceptions, IP is not part of the mainline curriculum of most such programs. When IP is offered, often the instructor is an adjunct lecturer rather than a full-time faculty member. This Kat recognizes that there is a unique challenge in finding an effective way in presenting IP in a way that highlights its role in management decisions rather than merely as a form of legal protection. In particular, there is an absence of good case studies for use in presenting IP in the MBA context. But this should be a call for increased efforts in this regard. Instead, making a research career on the role of IP in business management does not appear to be the way to tenure and success for a prospective business school academic.

This Kat has frequently observed that IP went from post-war irrelevance, bordering on hostility, to a “perfect storm” moment in the 1980’s, where it seemed that IP could do no wrong. Some erosion from those giddy days was to be anticipated. But, as Jeremy reminded us in his final words, while cyclical advances and retreats can be expected, we are ultimately responsible for the state of IP within the broader community. That responsibility extends from doing a better job with the financial sector, the media and youth to contending with the erosion of IP within key segments of the university.

Still excited after flying from Milan to London just to
attend the 10th Anniversary Conference of
the Journal of Intellectual Property Law & Practice[#jiplp10 was the relevant hashtag, and our beloved Jeremy live-blogged the event here], our dear friend and
colleague Alberto Bellan is nonetheless back with his
74th edition of his invariably helpful Never Too Late feature, summarising the
content of last week's Katposts.

Katfriend
and occasional contributor Dorothea Thompsonreports on BSI
Enterprises Ltd & Another v Blue Mountain Music Ltd[2015] EWCA Civ 1151, a 18 November ruling
of the Court of Appeal, England and Wales, applying the principles of
contractual interpretation in the context of a fairly complex music copyright
assignments involving some the much-missed king of reggae's songs.

Katfriends Ray Black and Mary Guinness (Mishcon de Reya)
analyse the Italian decision in the case that originated that wonderful Court
of Justice of the European Union's (CJEU) ruling in Case C-355/12 Nintendo
v PC Box[noted here and here].

From Katfriend Nuno Sousa e Silva who
teaches at the Law School of the Portuguese Catholic University, Porto
(Portugal), comes an analysis of an issue that is not only sensitive within
Europe in general but may divide the Portuguese from the Scots: the interaction
of Europe's laws on the protection of geographical indications with those which
allow for the registration of trade marks.

As blogmeister Jeremy reported earlier this month, Mr Justice
Arnold granted an injunction against Sandoz which was about to launch a
full-label product, notwithstanding that he had considered the patent invalid
in the decision now known as Warner-Lambert V[see
posts here, here and here] because
he had given permission to appeal and so there was a possibility that the Court
of Appeal would find the patent valid. Darren reports.

YouTube to
litigate copyright infringement/fair use actions on behalf of users harassed
by subject to inappropriate DMCA takedown requests? This is apparently
what is going to happen soon, as IP enthusiast Nedim
Malovic (Stockholm University) explains.

In case you were
wondering what to do with your precious leisure time over the end-of-year
period when things get a bit quiet, Jeremy has some recent intellectual
property publications that might take your fancy, the latter being US
Patent Law for European Patent Professionals, by Audrey Nemeth; IP
and Other Things: a Collection of Essays and Speeches, by Katfriend and
judge-turned-academic Sir Robin Jacob; Owning the World of Ideas:
Intellectual Property and Global Network Capitalism, by Matthew David and
Debora Halbert; and MindWealth, by William A. Jones.

A few days
ago the Court of Appeal of England and Wales handed down its decision
in Rovi Guides Inc v Virgin Media Ltd
& Others[2015] EWCA Civ 1214. As
Annsley explains in this post, that litigation started back in 2012 and focuses
on an exciting Rovi's patent - European Patent (UK) No 0, 862,833 - which
relates to interactive video communications and viewer-controlled selection of
programming information.

Last Thursday, the German Federal Supreme Court (BGH) decided on two actions against internet service providers over access to websites linking to copyright infringing material. In the first action, the collecting rights society GEMA sought to enjoin Deutsche Telekom, Germany's largest internet access provider, from providing access to the website "3dl.am". 3dl.am hosted a collection of links to files in file repositories such as Netload, Uploaded or Rapidshare (itself the subject of several BGH decisions), which contain material for which GEMA members own the copyright.
Both first and second instance ruled against GEMA, and the BGH on appeal (Revision) confirmed. The BGH reminded everybody that "Member States shall ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right" (art. 8(3) InfoSoc Directive). Access providers could therefore be enjoined from providing access to sites hosting or linking to copyright infringing material if they knowingly (willentlich) provided the means to allow the infringement, provided they failed to take reasonable care ("zumutbare Prüfungspflichten verletzt").

However, the interest of the copyright owners in protection of their property, the interest of the access provider in their business (Berufsfreiheit) and the interest of the consumers in the free flow of information had to be balanced (muses Merpel, balancing is going to make for a predictable judgment for sure...). Blocking injunctions were not only permissible when the blocked domain contained exclusively infringing material, but also when the legal material was insubstantial compared to the illegal material. The fact that it was always technically possible to circumvent blocks did not mean that they were ineffective as such.

But a blocking injunction against an ISP required that the right owner(s) had first taken steps against the primary infringer, such as the website operator or host provider, and failed to stop the infringement, or it was clear from the outset that there was no likelihood of success at all to prevent the primary infringement. The right owner(s) had to take reasonable steps, for example by hiring a private investigator or involving criminal prosecution authorities, to determine the identity and location of the primary infringer.

In the case against "3dl.am", GEMA had obtain an ex parte injunction against the operator of the website which could not be served at the address listed with the domain name registrar. GEMA then

Nope, the primary infringer is not in here

sued the host provider, but withdrew the complaint after it became clear that the host provider's address was false, too. According to the BGH, GEMA should have made further enquiries and could not go after the access provider merely because the listed addresses of the primary infringer(s) were false.

Since the full reasons for the decision are not published yet, a legal analysis is difficult at this moment. It does seem that the BGH places a rather high burden on the right owners to investigate the whereabouts of the primary infringers, and it is not exactly clear what the right owners need to do to fulfil these obligations. Fodder for lawyers, in other words.

The AmeriKat taking off her paw socks and ready for afight....or not, if the Stanford Technology Law Review studyis to be believed

To fight, or not to fight: As a purebred litigator, not fighting can be an anathema to the AmeriKat. However, reading the Wall Street Journal last week she came across this article which reported that more than a fifth of survey respondents dealt with the threat of a patent lawsuit by "doing nothing" and feeling no pressure to act. The survey was conducted by Colleen Chien (associate professor at Santa Clara University School of Law) in 2014 and its findings published in the Stanford Technology Law Reviewhere. The tactic seems to pay some dividends for respondents in that they do not get dragged into protracted and expensive litigation which, for start-ups and SMEs, can seriously harm their business before it gets off the ground. The WSJ article also refers to a study conducted by Roger Smeets of Rutgers who found that a firm's involvement in patent litigation can often chill their innovation; the study found that patent litigation accounted for a negative impact on corporate R&D intensity of 2.6-4.7% points. Although the "do nothing, feel nothing" approach is not appropriate in all circumstances when patent litigation is threatened (especially, as the article notes, where there is a "patent bully" running rampant), there seem to be at least some justification in keeping your head down. Now if only there were similar statistics to support not responding to the constant e-mail deluge (on which see this fascinating article in The Atlantic about e-mail originated hyperemployment).

'Tis the season for trade mark conference: If, having already been inundated by a swarm of holiday party invitations, you would rather flex your mental rather than your stomach muscles, then IPKat's friends from the Competition Law Association may have an event for you. The CLA brings news of an exciting event being held in London on 9 December 2015 at 6PM on the topic of "EU Trade Mark Law reform and its impact on practice" with the wonderful Verena von Bomhard (Bomhard IP, Spain) speaking. Details of the event can be found here and to register please click here.

Friday, 27 November 2015

"Interactive special events video signal navigation system". If those collection of words don't get you excited, then you probably have not been following the Rovi v Virgin Media litigation. Yesterday, the Court of Appeal handed down its decision in Rovi Guides Inc v Virgin Media Ltd & Others[2015] EWCA Civ 1214 dismissing Rovi's appeal. The litigation which started back in 2012, focuses on Rovi's patent - European Patent (UK) No 0, 862,833 - which relates to interactive video communications and viewer-controlled selection of programming information.

Rovi's invention allows the television viewer to keep up to date of events/programs in real time which are currently available or will be (instead of scrolling or manually navigating to the information). The way the system does this is by using two signals - an identification signal and an information signal. The former signals that information is available. The identification signal may also include data that identifies an icon or text which is then displayed on the screen and alerts the view to the availability of information contained in the information signal. If the user presses the relevant button, the information signal is processed and the information is displayed on the screen.

Last year, Mr Justice Mann held that Rovi's patent was invalid for obviousness over Florin, an Apple PCT application published on 5 January 1995. Rovi successfully obtained permission to appeal on some its grounds, all of which were abandoned by the time it got to appeal. Rovi therefore sought permission to appeal from the Court of Appeal on one additional ground - whether the judge was wrong to find lack of inventive step in respect of claim 3 (and corresponding process claim 28). Claim 3 is a product claim dependent on claim 2. Although the Court of Appeal granted permission to appeal on this ground, after 15 pages the appeal was eventually dismissed. "Close, yet so far away...." chimes Merpel.

The issue that preoccupied the Court of Appeal was one of claim construction. The construction at issue was of the critical additional feature set out in item (ii) of feature C of Claim 3 below (underlined):

"Claim 3

A

A system according to claim 2, wherein said first
identification signal comprises:

B

i. data indicating the availability of said first information
signal;

C

ii. (a) data
defining an icon or textual matter alerting a viewer to the availability of
information or (b) data enabling
access to such an icon or textual matter as may be already stored on said
computer; and

D

iii. data defining said preselected times and said
predetermined time increments. "

Mr Justice Mann held that this integer was to be construed as meaning that data in the identification signal must trigger or invoke the icon, but that there was no requirement for a specific pointer
or address field be in the signal to identify where the relevant icon could be found. It was
enough if the signal itself, or some data in the signal, called for a icon to
be put up on the screen. This was supported by Virgin's expert witness. On appeal Rovi's counsel argued that the integers of claim 3 required a pointer to tell the set top box where to find the appropriate icon in its memory. Claim 3 therefore added more than Claim 2 and was therefore not obvious over Florin and the common general knowledge. However, the Court of Appeal agreed with Mann J's construction. Following this construction, the skilled team implementing Florin would arrive at a system in Claim 3 and it was therefore obvious.

Writing the leading judgment, Lord Justice Floyd highlighted two legal points on the construction of patent claims. First, it cannot be assumed that it was the patentee's intention that optional features described in the specification have been translated into requirements of the claim (Nokia v IPCom [2009] EWHC 3482). Second, that the inventor's purpose is not the be-all and end-all - one still must be concerned with the meaning of the language used (Virgin Atlantic v Premium [2009] EWCA Civ 1062).

Because the focused of Rovi's appeal was squarely on a dependent claim, the Court highlighted that the

"...frequently deployed canon of construction is that dependent claims would normally be expected to add technical subject matter to what is claimed in the claims from which they depend. Patent attorneys would not normally be expected to go to the trouble (and sometimes expense) of adding extra claims if they were no narrower than those which precede them. However, the judge’s construction did not mean that claim 3 had the same scope as claim 2. It is now common ground that feature C(iii) was not implicit in claim 2. Feature C(i) on the other hand was implicit. In these particular circumstances I can see no reason at all why the skilled person should assume that either option in feature C(ii) was intended to add something to claim 2. In truth claim 3 sets out to list explicitly the contents of the identification signal. That is not something which is attempted in claim 2. I would not attach weight to the fact that, on the judge’s construction, feature C(ii)(b) did not itself add anything of substance to claim 2.

Whilst admiring its sophistication, I am not persuaded by Mr Meade’s “mis-match” submission about options (a) and (b) in feature C(ii). I do not accept that anything is to be drawn from the fact that option (a) of feature C(ii) requires extra data capacity, and therefore something different from claim 2. I think it is unrealistic to suppose that the skilled reader would reason that, because option (a) adds something to claim 2, then he should assume that option (b) is also seeking to do that as well. I accept Mr Mellor’s submission that the skilled person is more likely to assume that the patentee is seeking to cover, in explicit language, all ways he can think of arriving at a prompt on the screen."

The patentee’s purpose is of course a powerful guide to the construction of patent claims. One must, however, be careful to match up any purpose one derives from a reading of the specification with the claim or claim feature under discussion. This is not always straightforward. The purpose on which Mr Meade relies arises out of the description of content-specific icons in paragraph [12] of the specification. The skilled person would, so the argument runs, infer that the patentee had chosen the language of feature C(ii)(b) specifically in order to limit this claim to an arrangement capable of providing this functionality. I see no reason why the skilled person should follow this line of reasoning at all. Rather I consider that the skilled person would infer that the patentee had chosen entirely general language which was capable of encompassing such an arrangement, but was not limited to it.

It is true that the judge said that the point about multiple icons appeared to have fallen away. Given that claim 3 was not high on the agenda of issues at all until a very late stage in the trial, I am not surprised that he had gained that impression. Certainly, paragraph [12] of the specification does not seem to have featured strongly in the submissions or evidence until then. Moreover, it is possible that what the judge meant was that it was not contended by Rovi that claim 3 was limited to a system with multiple icons. Mr Meade accepted before us, and I believe before the judge, that a system with a pointer to the address of a unique icon would still be within claim 3. But I have reached a very firm conclusion that paragraph [12] does not help Rovi or save claim 3 from a finding of obviousness. So, if the judge indeed misspoke, it makes no difference to the outcome.

I do not think, therefore, that the judge overlooked or misunderstood Rovi’s arguments about the construction of claim 3. He considered and rejected them, and in my judgment he was right to do so.
"

The AmeriKat has not had time to fully digest the decision, but wonders how much the "last minute" nature of Rovi's inventiveness argument on Claim 3 had actually played in the judge's mind. Although he dealt with the point on the record, had the feature really been that inventive one may have expected the patentee to have dealt with it a little earlier than on day 6 of the trial. Indeed, the judge observed that it was not always clear throughout the case where the dispute about the feature lay. The Court of Appeal, at paragraph 45 (the penultimate paragraph above), plainly had sympathy for the judge on this point.

One of the
advantages of being part of the lively IP blogosphere is the opportunity to
discuss with good friends and colleagues what’s keeping them busy, what alarms
them and what they are looking forward to. Having entered into and gained from
such interesting discussions pertaining to the universe of brands this past
year, and as his IPKat visit draws to a close, this GreeKat thought to write a
series of posts, about the most thought-provoking issues passing through his newsfeeds
or e-mail inbox.

First up, is the
curious and expanding case of brand evaporation in consideration of public
texture consumer interests (whether actual or not). This post will cover the product plain packaging trend. It will be
followed by another offering a thought or two on how brands, from lifestyle
dictators, may be en route to exile from consumer life, ‘cleansed’ and
re-defined by a new regulatory paternalism.

Tobacco has been the
first terrain of plain packaging initiatives. In December 2012, Australia was
the first (currently still the only) jurisdiction to introduce tobacco plain
packaging, on the premise that it would potentially bring down tobacco
usage. “Plain” may also not be an
accurate description in view of the graphic visual elements cigarette packs are
to bear. 3 years on there is still considerable debate about the effects of this
regulatory initiative. In the meantime,
tobacco plain packaging is due for implementation in Ireland and the UK on 20
May 2016, and is under formal consideration in a handful of other countries. Next month, the English courts will hear the
tobacco industry’s challenge against the UK tobacco plain packaging scheme.

The IPKat has hosted
several posts, including this, this and this, as
well as one on the economics of cigarette packing, on the various arguments in favour or against
tobacco plain packaging. Lord Hoffmann, a former Law Lord, Honorary
Professor of Intellectual Property Law at the University of London and Chair of
the Institute of Intellectual Property Research Council – well-known to the readers
of this blog – issued
two opinions in which he concluded that plain packaging constitutes an
unlawful deprivation of property. This Kat has but nothing to add. He does feel
though that there should be a distinction between regulating advertising and
curtailing what the CJEU termed “normal usage” of trade marks (In BAT, C-491/01);
that trade marks, comprising “unacceptable” (whatever this means, which is
another big discussion) advertising slogans can be tackled via absolute grounds
for refusal; and that it would be slightly contradictory that such a mark were
registered but then banned from being used for the very reason it should have
been rejected. What strikes him the most, though, is the possible expansion of plain
packaging initiatives into other areas as well.

Those within the IP
community arguing against plain packaging warned that it does not revolve only
around tobacco, as its underlying simplistic rationale (i.e. that trade marks are a billboard
to promote unhealthy goods) is essentially open-ended. And so it seems to be: back
in 2012, a MARQUES Workshop (reported here by the Class 46 blog) discussed a possible spill-over of plain packaging to the alcohol
and food industries.

Indeed, Indonesian
authorities are considering plain packaging for alcohol, in Australia, talk of plain packaging for fast food has begun, and similar
initiatives are discussed in connection with sweets and the
fight against obesity.
Pharmaceuticals may be another sector of plain packaging initiatives,
which kind of puzzles this GreeKat, as he would have thought that pharma trade marks would rank high in the
list of not extremely attractive trade marks, while the usual intervention of
pharmacists would hinder the kinds of marketing techniques used, e.g., in relation to toys
(another category discussed for plain packaging based on this story).

The above reveal a
rather different setting about the relationship between trade marks and
consumer protection: we usually argue about whether trade mark law includes a
consumer protection aspect or not and ask whether by protecting trade mark
rights we also attend to consumers’ interests and welfare (the IPKat has a very
informative post on this).
We also argue about how the protection of consumers, particularly of sensitive
groups, such as children, requires restrictive regulatory intervention via
consumer laws, and we discuss whether particular measures are efficient and
proportionate. But plain packaging seems to be rooted on the idea that trade
marks harm consumer welfare and that consumers are somehow better off if they
appear much less on the goods. Does this
mean that trade marks, traditionally origin and guarantee indicators and tools
to reduce consumer search costs, are unwanted for certain types of products or
services? And if so, can we draw that border line?

Jeremy Phillips, who retires from this blog to a unanimous chorus of praise, gratitude and affection

Following Jeremy’s post announcing his retirement from the IPKat blog, the entire blog team wishes to extend an inadequate but very heartfelt thank you to Jeremy for the endless work he has put into the blog for the last 12 years, day after day.

It is self-evident to everyone who has read or interacted with the blog that, without Jeremy’s constant efforts, the IPKat could never have continued to grow and flourish as it has done. We know the community of readers and the IP community at large will join us in wishing Jeremy the very best in his retirement.

Having enjoyed yesterday’s retirement celebrations with Jeremy, today the IPKat blog team reverts to business as usual. The IPKat blog is a collective effort, and the members of the team are committed to continuing to provide news, commentary and analysis on all aspects of IP, with the continuing support of all of our readers, commenters, correspondents and guest contributors.

The IPKat and Merpel are as eager as ever to hear from you the readers, whether it is to draw their attention to news, case law, information about IP events, guest post ideas and submissions, or feedback on the blog and its contents. The IPKat’s email address remains unchanged (theipkat@gmail.com), as does Merpel’s (merpel.mckitten@gmail.com).

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